No Waiver: Motion to Transfer Based on Improper Venue Granted

Several months ago I announced the last ruling that dealt with a claim of waiver for failure to assert an improper venue claim timely following TC Heartland.  I was premature, because there was still this case, which was stayed due to pending IPR proceedings three months before Heartland was decided.  When the stay was lifted several weeks ago, the defendant asserted an improper venue argument, and the plaintiff asserted that the defense had been waived.

Motion to Reconsider Order Granting Motion to Transfer

Let’s start the week off with a little palate cleanser in the form of an order dealing with a motion to transfer a patent case to the Northern District of California, but with the added frisson of a different procedural context – this one’s an order on a motion to reconsider the Court’s order granting the motion to transfer.

Redeposing Experts Close to Trial – Two Outcomes

When cases get close to trial, the requests for additional discovery and the orders granting it can get a bit harried as bits and pieces are granted or denied.  And sometimes those grants (or denials) come with costs that do have a price tag.  Here are a couple of recent orders from the Eastern District of Texas that illustrate how those can work out.

Marshall/Tyler patent scheduling conferences – September 11, 2018

If it’s the second Tuesday of an odd numbered month, there’s a good chance there are patent case scheduling conferences going on across the street at the Judge Hall courthouse.  This month was no different, with numerous cases heard for both Judge Gilstrap’s Marshall and Tyler dockets, as set forth below.

VirnetX – JMOL, MNT, enhanced damages & attorneys fees rulings

A trip to the West Coast for a mediation kept me from posting this earlier, but Judge Schroeder’s unredacted opinion in the VirnetX case resolving the postverdict motions is now out, and provides the latest analysis on many issues of interest to practitioners, including most notably enhanced damages, as none were awarded.

VirnetX Litigation Slouches Towards Another Appeal

Apologies to Yeats, but it is referred to as the “most thoroughly pillaged piece of literature in English literature”, so piling on is permitted. Judge Schroeder entered another final judgment in the VirnetX case last week after denying defendant Apple’s most recent JMOL and motion for new trial. The order itself is filed under seal for the moment, but will be unsealed, less any needed redactions from the parties, on September 10. VirnetX – final judgment VirnetX – sealing order

Motion for Summary Judgment as to Defenses of Improper Inventorship & Derivation

An improper inventorship defense rests on the statutory requirement that a patent is invalid if more or fewer than the true inventors are named.

A defense of “derivation”, on the other hand, requires proof of both prior conception of the invention by another and communication of that conception to the patentee.

Both defenses require proof by clear and convincing evidence.

This case presents an interesting situation in which the defendant claimed that the plaintiff wasn’t the inventor, but did not identify who else was.  Given that the procedural context was the plaintiff’s motion for summary judgment as to the defendant’s improper inventorship defense, the issue presented was thus whether Defendant had created a genuine issue of material fact regarding its defenses of improper inventorship and derivation.

On the derivation defense, the issue was whether the Defendant had adduced proof that the “entirety” of the invention was conceived by others.

Section 1404 venue order

In recent weeks I have been looking at various venue opinions over the past few months, and realized that I’ve been giving Section 1404 motions asserting inconvenience short shrift since improper venue post Heartland/Cray is sort of the new black in venue law.  This opinion remedies that somewhat with an opinion from a few weeks back that has some really useful insights into the relevant analysis.